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S.S.DUBE
ADVOCATE (0. S. 3220)
_______________________________________________________________
9-B, 1st Floor, Islam Building, 46, V. N. Road, Fort, Mumbai-400 001
Tel. No. 4004 1527 & 4005 7569
_______________________________________________________________

Date: 05-05-2020

BY RPAD / COURIER / FAX / E-MAIL

To
M/s. Nichia Corporation,
122, D T Mall, City Contra,
Shalimar Bagh,
New Delhi - 110088, (India)
South East Asia Pacific,
Email :whrcorg @gmail.com

Dear Sir,

Re.: Notice for Infringement of Registered Trademarks and

passing off under Common Law.

I am concerned for my client M/s. Khadi & Village Industries Commission

which is a statutory body formed under the Government of India, under the
Act of Parliament, 'Khadi and Village Industries Commission Act of 1956',
having its registered office at "Gramodaya", 3, Irla Road, Vile Parle (West),
Mumbai, Pin-400056, Maharashtra, India, on and under whose instructions, I
address you as under: -

1. My Client says that it is a statutory body functioning under the Ministry of

Micro, Small and Medium Enterprises of Government of India. It is fully
financed by the Central Government of India.

2. My Client is set-up by the Central Government of India to promote,

implement and provide the basic structure and platform for the rural
artisans and workers by implementing and organizing Khadi and Village
Industries Programme through individuals and societies including co-
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operative societies, which are affiliated with my Client. My Client is

engaged in the promotion and development of KHADI through the
institutions certified by my client on the compliance of its terms and
conditions as well as the rules and regulations formulated from time to
time to safeguard the interest of not only the workers and artisans at low
level of strata in the remote village and tribal areas of the countries but
also to the citizens, customers and entities not to be betrayed by selling
them tempered and non-Khadi garment products and textile materials.

3. My Client is an apex organization under the Ministry of Micro, Small and

Medium Enterprises, with regard to Khadi and village industries within
India. KVIC is responsible for the planning, promotion, organization and
implementation of programs for the development of Khadi and other
village industries in the rural areas in coordination with other authorized
agencies under its umbrella engaged in rural development wherever
necessary and has been engaged in the promotion and sale of Khadi
products since its inception in 1956. As part of its functions, My Client is
undertaking marketing of Khadi &village industries products produced
by its Implementing Agencies through various brand names.

4. My Client has adopted and used the trademark “KHADI” (which forms
part of their trade name, corporate name, trading style and trademarks)
continuously since its inception in 1956. The trademark KHADI is
prominently featured on its products, retail stores, websites, promotional
material, advertisements, magazines, catalogues, exhibitions, etc. KVIC
has more than 8058 sales outlets spread across the country including 7
Departmental Sales Outlets owned by KVIC. The products bearing the
trademark “KHADI” are also sold internationally through exhibitions
arranged by KVIC. In addition, My Client has been actively involved in
the community in its efforts to further promote its brand including its
sponsorship of various events and organizations. As a result of these
efforts, My Client’s customers, and the general public, have come to
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recognize My Client as an established and successful organization

promoting Khadi and Khadi products.

5. My Client is also the registered proprietor and bona fide applicant of

several trademarks bearing the mark “KHADI” and

in India and abroad. My Client has applied for registration of

the trademark/trade name “KHADI” and combinations thereof in several
classes such as 01, 03, 05, 08, 14, 16, 18, 19, 20, 21, 23, 24, 25, 26, 27, 35,
38 in several countries such as India, United Kingdom, European Union,
China, Australia, Germany, Russia, to name a few.

6. My Client has also registered the domain name <www.kvic.org.in> since

April 30, 2003 which is accessible to users across India and the world.

7. My Client’s products are available on various online shopping and e-

commerce portals such as <www.paytm.com>, <www.aaarmart.com>, to
name a few, which are accessible to consumers around the world
including India. Due to open, regular and extensive use of the said KHADI
trademarks coupled with efficient advertising and high stringent, non-
compromising standards of quality offered by KVIC, their goods and/or
services have become highly popular and well-known across the globe
including India. As a result, goods and/or services provided by KVIC
bearing the said KHADI trademarks command huge sales and generate
large revenue. As a result of such advertisement, publicity, promotion and
active marketing by My Client, the said KHADI trademarks have come to
be associated exclusively with KVIC alone. The knowledge and
awareness of My Client’s marks have not been restricted to the people of
the countries in which the goods are freely available but the knowledge
and awareness has spilled over and has reached even the countries where
the goods have not been sold by My Client.
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8. My Client’s products under the trademarks KHADI, and

, have been widely promoted inter alia through print and audio-
visual media including television programmes, advertisements, articles,
write-ups appearing in leading newspapers, magazines, journals,
shopping festivals, exhibitions, social media, such as Facebook, Twitter,
YouTube, etc. all of which enjoy a wide viewership, circulation and
readership.

9. Years of continuous efforts, time, capital, painstaking efforts and

resources have been invested pursuant to which the KHADI
trademark/trade name has attained immeasurable goodwill and
reputation so much so that the KHADI trademark/trade name has attained
secondary meaning coming to be identified exclusively with My Client on
a global footage. The KHADI trademark/trade name is a well-known
trademark of My Client. Also, in order to accord statutory protection to its
KHADI trademarks, KVIC has secured registrations in various countries
including India and has also established sole proprietary rights and
common law rights in respect of its trademarks bearing the word/term
“KHADI”. Thus, the members of trade and public at large associate the
mark/trade name “KHADI” and the products/services offered there
under with My Client alone and none else.

10. By virtue of prior adoption, extensive, continuous and uninterrupted use,

extensive publicity in respect of the trademark/trade name “KHADI”
coupled with the several registrations of the “KHADI” trademarks, My
Client is entitled to exclusive proprietary rights therein, and the members
of the trade and public associate the “KHADI” mark/trade name with the
products and services of My Client alone and none else. As the
products/services provided under the “KHADI” mark/trade name obey
the rules to very high standards of quality, the “KHADI” mark/trade name
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enjoys an enviable reputation and goodwill throughout the world. Due to

the unparalleled goodwill and reputation which My Client continues to
maintain by its untiring efforts and extensive promotion and uninterrupted
use, the mark/trade name “KHADI” has been a runaway success amongst
the members of trade and public at large and has succeeded in making
the mark synonymous with My Client in the minds of the intending
purchasers and the consuming public at large and the said trademark/
trade name/ corporate name/ trading style “KHADI” has assumed
significance and qualifies as a well- known and famous trademark.

11. Further, the word/mark “KHADI” is the distinctive feature of several of

the “KHADI” trademarks and is prominently featured on KVIC
products/services, promotional material, brochures, pamphlets, letter
heads, invoices, stationery, websites, magazines, social media websites,
etc. The word/mark “KHADI” forms an essential, dominant, prominent
and distinguishing feature of My Client’s corporate name, business name,
trade name, trading style, trade mark and house mark.

12. It has come to My Client’s notice that you have been unauthorizedly using

the marks “on your products such as masks, Personal

Protective Equipments etc. and widely advertising the same in total
violation of the Trade Mark Act and Khadi Mark Regulations. You have
deliberately adopted an identical mark in respect of same/similar goods
with the intention to trade upon the goodwill and reputation of My Client
and to pass off your goods as that of My Client’s, thereby taking blatant
advantage of My Client’s prior registered, used and famous trade

marks“KHADI”, and . You are thereby

diluting/damaging the goodwill and reputation of KVIC which continues
till date. Further, My Client states that you have blatantly copied My
Client’s entire trademarks to create an illusion of a coined mark which is
apparent from the face of it. My Client states that apart from the similarity
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in the marks, the impugned marks “KHADI”, and

bear similarity in respect of nature of goods, class of consumers, traders
and course of trade, inter alia and such similarity is causing deception
and/or confusion amongst the members of trade and public at large as the
illegal affiliation/association portrayed by you is causing consumers into
believing that you have relationship with and/or are affiliated with,
associated with My Client which is absolutely misleading and entirely
false. Such confusion or deception amongst the members of trade and
public has caused and continues to cause immense irreparable loss, harm
and damage to the goodwill and reputation of My Client as well as their
famous and well-known trademarks and tradename “KHADI” ,

and .

13. My Client being the sole and exclusive owner/ proprietor/prior adopter

and user of the trademarks/trade name “KHADI” , and

has attained immeasurable fame, reputation and goodwill

concurring with the trademarks/trade name “KHADI” , and

so much so that the same has come to be identified exclusively

with KVIC on a global footage. The members of trade and public associate

the trademarks/trade name “KHADI”, and with the

products of My Client alone and no one else. Therefore, the adoption and
unauthorized use of an identical/deceptively similar mark in any form in
respect of same/similar goods clearly amounts to violation of KVIC’s
statutory and proprietary rights in the trademarks/trade name “KHADI”,
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and and passing off under applicable provisions of

law.

14. My Client states that only KVIC being the sole and exclusive owner,
registered proprietor and user of the trademarks/trade name “KHADI”,

and has the exclusive right to use and deal with the

trademarks/trade name “KHADI” , and and the

products bearing the trademarks/trade name “KHADI”, and

. My Client has never assigned, licensed or in any way

authorized you to use its trademarks/trade name “KHADI” ,

and and/or products bearing the trademarks/trade name

“KHADI”, and in any manner whatsoever.

15. Your unauthorized and illegal use of KVIC’s prior registered, used and

well –known trademarks/trade name “ in respect of

same/similar products clearly indicates that you have been passing off
your products as that of My Client.
16. In above circumstances, you are liable to be sued and prosecuted under
the civil and criminal proceeding including the proceedings to seize and
confiscate the advertisement articles, materials, hoardings, promotional
material, brochures, pamphlets, letter heads, invoices, stationery,
websites, magazines, social media websites, etc., having the mark Word
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“KHADI” and its formative Marks like ,

and , without prejudice to any other rights that my client may

have in law or in equity, you are hereby calls upon you to comply with the
following requisitions forthwith : -

a) To cease and desist immediately and forthwith from using the trade
name, business name, corporate name or trading style, trademarks

“KHADI”, and or any other marks/names

identical with and/or deceptively similar to KVIC’s prior registered,
used and well known trademarks, trade name, business name,

corporate name, trading style, house marks KHADI”, and

in any manner whatsoever or howsoever.

b) To cease and desist immediately and forthwith from doing business,

selling, offering for sale, advertising or otherwise howsoever, dealing
in any similar products/services bearing the impugned marks

“KHADI”, and or any other marks/names

identical with and/or deceptively similar thereto so as to infringe My

Client’s trademarks “KHADI”, and registered

under the Trade Marks Act, 1999 in India and several other countries.

c) To cease and desist immediately and forthwith from using, marketing,

distributing, selling, offering for sale, advertising or otherwise dealing
in similar products/services and bearing the marks “KHADI”,
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and or any other mark/label identical in any

manner with and/or deceptively similar to the trademark/trade name

“KHADI”, and of my Client so as to pass-off your

products/services as and for the product/services of my Client or in
some way appear to be connected and associated with my Client and
its business.

d) To give my Client an unconditional apology and an Undertaking in

writing on a non-judicial stamp paper that you or any person claiming
through you will not hereafter use, advertise, market, distribute, sell,
offer for sale, or otherwise, deal in identical/similar products and

services bearing the marks “KHADI”, and or any

other mark identical with and/or deceptively similar to KVIC’s

registered trademarks “KHADI”, and in any

manner whatsoever.

e) To surrender to my Client, the entire stock of material used for

promotion or marketing or advertising, bearing the impugned marks

“KHADI”, and along with any material bearing the

impugned marks “KHADI”, and used for printing

the same, for destruction thereof or provide satisfactory evidence of
such destruction to my Client.

f) To make full and complete disclosure of any other products and/or

material and/or promotional campaigns/advertisements being made
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by using Khadi and/or similar marks including but not limited to the said
marks being used in any print or electronic form.

g) Disclose the volume of articles and allied materials like packaging,

brochures, advertisement, publicity materials etc. (if any) which bears
the impugned Word “KHADI” and its formative Marks like

, and in writing to my client

and destroy it forthwith,

h) To pay Rs. 50 (Fifty) Crores to my client, presently estimated loss and

damages caused to it by my client for using the impugned trademark

of the Word “KHADI” and its formative Marks like

, and and the passing off the goodwill and

reputation of my client;

i) In addition to the above you will be also liable to pay to my Client such
further loss and damages for loss of its sales and all costs incurred by it
towards legal proceedings.

j) To attend the offices of my Client within seven (7) days of the date of
this letter with prior appointment of their Legal Department or the
undersigned along with your Books of Accounts and IT Returns for the
period of 5 preceding years from the date of this notice, including
unaudited Balance Sheets of the present financial year, if any.

17. Kindly, note that if the above requisitions as mentioned in Para 16 (a) to
(h), are not complied with within the said period of 7 days from the date
of receipt of this notice, my client will be constrained to initiate the said
civil and criminal proceeding including the proceedings to seize and
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confiscate the stocks of the articles and materials with the Word

“KHADI” and its formative Marks like ,

and .

18. Further, note that I have been given peremptory instructions to institute
said legal proceedings against you without any further notice and if my
client is forced to do so the same will be entirely at your risk as to cost
and consequences thereof, please take note thereof.

Yours faithfully,

(S S Dube)
Advocate for Khadi & Village
Industries Commission.